UPC_CFI_355/2023 – FUJIFILM v Kodak

Expert Commentary

Rule 36 (further pleadings) Background The defendants filed a Rejoinder containing new factual allegations regarding its prior use defense. The claimant wanted to respond, but its request (R.36 RoP) was refused by the Judge-Rapporteur (“JR”). The JR stated: 1. The fact that you have only one pleading to react to new allegations is a consequence of the Rules of Procedure. 2. As to the application of R. 36 RoP, the Court should take into account: a. the reasons for the request; b. the risk of delay. The JR stated that the request could have been made earlier (as the filing of the defendants was on 19 August, and the request for a further written submission on 3 October) and that claimant could further respond to the new allegations during the oral hearing. The claimant asked for review by the panel (R. 333 RoP). Decision of the panel 1. The JR has correctly evaluated the risk of delay. 2. The fear of claimant that it will not be able to deal with the new allegations in sufficient detail during the oral argument does not justify a different decision. Comment 1. It is true that 6 weeks is quite a long time for filing a request. Still, it is difficult to judge without knowing the facts but “prior use” is very often fact intensive and especially also with a Japanese claimant (time difference, language issues) may require some time to investigate. 2. However, it seems to me more important that the defendant introduced new factual allegations about the prior use in its last submission. I assume that these allegations couldn’t have been made earlier and were in response to the reply of the claimant (front-loaded character of the proceedings). 3. Of course, a party can respond to such new facts during the oral argument. However, that will mean that the Court hears these arguments for the first time during the oral hearing and this seems to go somewhat against the idea of the Rules of Procedure (and the institute of the JR and the interim conference). It is the intention that at the oral hearing, the facts are on the table and that the Court can give a decision after the oral hearing. 4. I understand that the oral argument in this matter is scheduled for 17/18 December 2024. Quite frankly, I do not see then what the delay would be, if the JR on 30 October (the date of his decision) would have given the claimant two weeks to respond only to the new factual allegations, (e.g. including page or word limit) and giving defendant two weeks to respond only to this reaction. This would have meant that almost three weeks before the oral argument this exchange would have taken place, without any delay.

Key Holdings

• A request for further pleadings (R. 36 RoP) to respond to new factual allegations in a rejoinder was denied by the Judge-Rapporteur and upheld by the panel.
• The panel confirmed the JR's evaluation of delay risk and stated that the claimant's fear of insufficient detail at oral argument did not justify a different decision.
• The Rules of Procedure limit the number of pleadings, and new allegations can be addressed during the oral hearing.
• The commentator suggests that allowing a brief, focused response to new allegations might not cause significant delay and aligns better with the front-loaded nature of proceedings.

Tags

• Case Management
• Oral Hearing
• Pleadings
• Prior Use
• Procedural Issues

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